iPhone + iTunes = iNfringement (Part 1)

As some of my close friends and family already know, I became a proud owner of an Apple iPhone over this past Thanksgiving. Yes, it is my pride and joy and I have had it surgically attached to my left hand. Anyway, for those of you who aren’t familiar with how the iPhone works, owners of the iPhone are able to download applications (apps) to their phones through the Apple iTunes App Store. Some are free and some can cost hundreds of dollars, although most apps are less than $3. These apps are developed by individuals and businesses and are submitted to Apple for distribution through the App Store. Apple and the developers split the revenue earned from purchases by iPhone users. There are approximately 100,000 apps available in the App Store, the vast majority of which are complete garbage but some of which are useful and/or entertaining.

Over the past six weeks, I have become increasingly aware of some interesting trademark issues related to the iTunes App Store. This post is the first in a two part series which looks at how application developers are putting themselves at unnecessary risk of being sued for trademark infringement and how they can reduce such risk.

This idea all started when I was browsing the iTunes App Store for news-related applications and quickly came across the following app:

Now, as you can see, the name of this application is called “Fox News Mobile” and the icon incorporates a nearly identical reproduction of the actual Fox News logo and font style shown below:

Since I find Fox News to be somewhat entertaining and moderately informative (please don’t hold that against me), I was about to pay a couple of bucks for what I thought was the official Fox News application when I noticed that its developer was a person named Joseph Nardone. I thought it was a little strange that the developer was seemingly an individual and not Fox News itself or one of its media divisions. I decided to conduct a search in the App Store for “Fox News” and found a completely different application called “Fox News Mobile Pro” shown below:

Unbelievably, this application is unrelated to the “Fox News Mobile” application and is also not the official Fox News application. In fact, as far as I can tell, there is no “official” Fox News application in the App Store. The “Fox News Mobile” and “Fox News Mobile Pro” apps are basically browsers that read and optimize articles from the Fox News website.

Being the inquisitive trademark attorney that I am, I decided to check out what other questionable third-party trademark uses I could find in the App Store. I began with a search of the famous trademark “NFL” and came across the following two applications:

The first application is named “NFL: Football News” and the icon incorporates a likeness of the well-known NFL emblem. The second application is called “iBet NFL 2010” and is basically a program which allows you to track all of your bets on professional football games and to receive live updated odds. Needless to say, neither of these apps are sponsored or endorsed by the National Football League.

I then performed a search of the well-known “NCAA” trademark, which revealed the following application not affiliated with The National Collegiate Athletic Association:

Does that NCAA stylized font look familiar? It should because it’s the same font used by the actual NCAA, as depicted below:

Next, I conducted a search on the trademark “Disney” and the following app named “Disney Facts” was revealed:

Note that the icon incorporates the very recognizable Mickey Mouse silhouette.

Finally, I searched the word “Starbucks,” which revealed the following “Find a Starbucks Coffee” application:

So, what should app developers take from the above examples? Well, clearly, there is no compelling reason or necessity for iPhone application developers to use the Fox News logo, NFL emblem, NCAA stylized font, or Mickey Mouse silhouette in connection with their apps other than to attract and deceive purchasers. In my opinion, such use is a blatant infringement of these trademarks because it is likely to cause confusion as to the sponsorship, affiliation, or endorsement of the apps with the owners of these famous logos and emblems. This should be avoided by application developers unless they have received permission from the trademark owners to use these logos/emblems.

Similarly, there is no compelling reason or necessity for iPhone application developers to incorporate the trademarks NFL, NCAA, or NHL as part of the name of their sports-related apps because there are generic phrases available for use as a substitute (e.g. “professional football,” “college basketball,” “professional hockey”) that readily inform purchasers of the content or theme of the apps. Developers should recognize that many businesses (such as the video game company EA Sports and various apparel companies) pay millions of dollars for a license to use these trademarks in connection with their products and are required to abide by specific guidelines so as to ensure that the trademarks are not tarnished in any way. This is why you can bet your bottom dollar that the National Football League would not be happy with its famous NFL trademark being used in connection with a gambling application such as “iBet NFL 2010.”

The tougher issues arise when developers use famous trademarks such as “Fox News, “Starbucks,” and “Disney” in the names of their applications without incorporating any of their associated logos, emblems, or distinctive stylized fonts. In these cases, there are no generic substitutes available and developers arguably need to use such trademarks to refer to the theme, function, or content of their applications. These are certainly not easy cases to deal with and, therefore, I think it’s important that developers consult with a trademark attorney in order to receive an opinion as to whether their particular use of a trademark would be considered non-infringing.

The bottom line is that iPhone application developers need to be aware of these kinds of trademark issues because, like any other business, they can be sued for infringement and can be on the hook for substantial monetary damages and legal fees. Just because an app is free or only a couple of dollars doesn’t mean that the owner of a famous trademark is going to ignore the infringement. Therefore, they should respect the intellectual property rights of others to avoid potential headaches down the road.

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